
Class T a a 3L 



- J a (> 7 



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CQEaftlGHT DEPOSIT. 



Patents^ Trademarks 
and Copyrights 



SECOND EDITION 



BY 

Frank L. Graham, L. L. B. 

V 

■ AND 

Ford W. Harris, Member A. S. M. E. 
Fellow A. I. E. E. 



Copyright 1921 by Graham y Harris 






\<^'^' 



GRAHAM & HARRIS 

A ttorneys-at-Law 
Solicitors of Patents 

Specializing in Patents, Copyrights, Trademarks, 

and Unfair Trade 

Practicing before The United States Patent Office, 

The Federal Courts, Courts of California 



Los Angeles, California 



■^\ 



f I ■< 






JUL I i 1922 % 



i 



PREFACE 



The reception accorded the first edition of 
this modest attempt to explain, in an elemen- 
tary manner the fundamentals of patent prac- 
tice, met with such success that we have been 
encouraged to somewhat extent its scope and 
to publish a second edition. 

We have not attempted to write a law book 
and those who wish to study the law, are 
referred to Walker, Robinson, Hopkins or 
other standard text books on this subject. 

It is the purpose of this book to present a 
broad and general explanation of those points 
in patent practice which the patent attorney is 
most often called upon to explain. It is 
thought that such an explanation will be of real 
service to the inventor and business man and, 
to a certain degree, to the lawyer in general 
practice. 

The treatment of the subject is, however, 
both brief and general and it should be borne in 



mind that the answer to a specific question in 
this field can only be determined after a full 
and complete consideration by a competent 
patent attorney, of all the facts surrounding the 
question. 

Frank L. A. Graham. 

Ford W. Harris, 



Los Angeles, Cal., 
October, 1921. 



Contents 



Page 

ABANDONMENT 

of application 78 

of experiments 38 

of invention 82 

AGGREGATION 31 

AMENDMENTS 

of applications 57 

APPEALS 
to Examiner-in-chief . . 63 
to Commissioner of 

Patents 63 

to Courts 63 

APPLICATIONS 

abandonment of 78 

amendments of 57 

divisional 62 

examination of 56 

forfeiture of 79 

formal parts 46 

procedure in patent 

offce 56,57,58,59,60 

where made 45 

ART 

defined 16 

ASSIGNMENTS 

assigned interest 21 

requisites of 86 

undivided interest .... 83 

CAVEATS 

law repealed 46 



Page 

CLAIMS 
character of . .49, 50, 51, 52 
definition of monopoly. 15 

COMBINATION 
claim for 50 

COMMISSIONER OF 
PATENTS 
appeals to 63 

COMPOSITION OF 
MATTER 

defined 17 

subject of patents 16 

CONTRACTS 

patent as contract 14 

relating to patents .... 85 

COPYRIGHTS 
in general 113 

COURTS 

jurisdiction in suits on 
contracts 101 

jurisdiction in infringe- 
ment suits 100 

suits, where brought.. 101 

DAMAGES 

for infringement 106 

DEFENSES 

in infringement suits ..103 

DEFENDANTS ' 

in patent actions ....101 



Page 

DESIGNS 
subject of patents 18 

DESIGN PATENTS 

infringement of 106 

duration of 18 

field for 19 

DISCLAIMERS ' 

purpose of 78 

DISCLOSURE 

in specification 47, 48 

DIVISIONAL 

APPLICATIONS 
nature of 62 

DRAWINGS 

nature of 54 

EMPLOYER AND 
EMPLOYEE 

shoprights 83,88 

when employer entitled 
to patent 87 

EQUIVALENTS 

mechanical equivalents 30 

EXAMINATION 

of applications 56 

EXAMINERS IN CHIEF 
appeals to 63 

EXTENSIONS 

of life of patent 79 

FEES 

attorneys 56 

Patent Office 55 

IMPROVEMENTS 

subject of patents .... 16 



Page 

INFRINGEMENT 

avoiding 91 

damages for 106 

defenses to 103 

of letters patent 95 

of machine patent .... 98 

of process patent 98 

suits for 99 

INJUNCTIONS 

against infringement . .105 

INTERFERENCES 

applications for patent 

in 67 

between application and 

issued patent 69 

issues 68 

preliminary statements. 67 

procedure 70,71,72,73 

question raised dl 

INVENTION 

defined 25 

element of patentability 25 
interests in 85 

JOINT INVENTION 

defined 21 

joint inventors 20 

mechanical assistance 
not 22 

JURISDICTION 

of Federal courts 100 

of state courts 101 

LICENSES 

express 85 

implied 87 

shopright 87 



Page 

MACHINES 

defined 17 

subjects of patents .... 16 

MANUFACTURES 

defined 17 

subjects of patents .... 16 

MARKING 

method of 81 

patent applied for .... 81 

MECHANICAL EQUIV- 
ALENTS 30 

MODELS 

when required with ap- 
plications 47 

MONOPOLY 

building a 89 

NEW MATTER 

in applications 58 

NOTICE 

before grant 81 

marking patented 81 

NOVELTY 

defined 34 

necessary to patentabil- 
ity 25 

prior art 29 

prior patent 36 

prior printed publica- 
tions 35 

prior use 37 

OPINIONS 

on commercial value.. 94 
on scope 93 



Page 

OATH 47 

PATENTS 

classification of 16 

correction of errors in 

letters patent 77 

design patents 18 

duration of 79 

extension of 79 

foreign patents 109 

in general 7 

scope of 96 

title to 22 

utility patents 16 

validity of 92 

PATENT APPLIED 
FOR 81 

PATENTABILITY 

aggregation 31 

invention 25 

mechanical equivalent 30 

mechanical skill 27 

mere changes in old 

things 29 

novelty 34 

prior art 29 

requirements of 25 

utility 39 

PATENT RIGHTS 

forms of 85 

in general 84 

nature of 9 

patent not a license. ... 10 

purpose of grant 8 

specification does not 

define rights 15 

PERSONAL VISITS TO 
PATENT OFFICE.. 60 

PETITION 46 



Page 

PRELIMINARY 

EXAMINATIONS 

how made 41 

not conclusive 41 

not made by Patent 
Office 40 

PRINTED PUBLICATION 

defined 35 

when negatives novelty 35 

PRINTS AND LABELS 
in general 114 

PRIOR PATENT 

when negatives novelty 36 

PRIOR USE 

as anticipation 37 

in foreign countries ... 35 

PRIORITY 

question of, between 
rival inventors 67 

PROCESS 16 

PUBLICATIONS 

Official Gazette 117 

Copies of patents 118 

Manual of Classifica- 
tion 118 

PUBLIC USE 

bar to grant 37 

RECORDING 

of assignments 86 

REVIVAL OF ABAN- 
DONED APPLICA- 
TIONS 78 

REDUCTION TO 
PRACTICE 
actual and constructive 68 



Page 

REISSUES 

broadened 75 

intervening rights .... 76 

narrowed 75 

SHOP RIGHTS 

implied from employ- 
ment 83,88 

SPECIFICATION 

claims 49 

description 47 

STATE OF THE ART 
defined 29 

SUBJECTS OF PATENTS 
classification of 16 

SUITS 

courts 100 

defenses 103 

jurisdiction of 101 

technical nature of . . . 100 
where brought 99 

TRADE MARKS 

United States 110 

foreign 112 

TIME REQUIRED TO 
OBTAIN ALLOW- 
ANCE 59 

TITLE 22 

UNDIVIDED IN- 
TEREST 83 

UNFAIR COMPETI- 
TION 107 

UTILITY 
necessary to patentabil- 
ity 25 

amount of 39 

V^HO MAY APPLY ... 19 



Chapter I. 
PATENTS IN GENERAL 



The United States Government has recog- 
nized inventions as an important factor in the 
industrial development of the nation and for 
the purpose of promoting the progress of 
science and the useful arts Congress has by 
appropriate laws, provided for the granting of 
patents of invention. 

To the individual, patents open a new field 
for personal endeavor and advancement, 
whether the patent is used as a nucleus for a 
business or whether the inventor, by license or 
sale, derives an income therefrom. 

To the business man, patents mean protec- 
tion and insurance to his business; protection, 
as the owner of a patent can prevent competi- 
tion by others; and insurance, as his ownership 



[7] 



of a patent relating to his business prevents this 
patent from falling into the hands of his com- 
petitors who might then prevent him from 
using the invention covered by the patent. 

To the public, patents mean new industries 
and developments. Under the protection of 
patents, new business enterprises spring up and 
invention and progress are fostered. The 
public shares largely in the fruits of a success- 
ful invention, as it must be better or cheaper 
to supplant what went before, and the public is 
the great gainer by the introduction of better 
or cheaper things. 

Purpose of grant. — It is the purpose of 
the Patent Laws to grant to the inventor the 
exclusive right to make, use, and sell his inven- 
tion for a limited time, provided the inventor 
will make a full disclosure of the invention 
accessible to the public. This disclosure of the 
invention is made by the inventor in his appli- 
cation for a patent and remains confidential 
between the inventor and the Patent Office until 
the patent is finally issued. The patent is a 
public record of the advancement made in the 



[8] 



art by the invention, and, at the same time, it is 
notice to the public of the exclusive rights of the 
inventor in his inventions. 

Nature of rights granted.— The exclu- 
sive rights or monopolies granted by a patent 
comprise the right to exclude others from mak- 
ing, selling or using the invention claimed in the 
patent during the life thereof. These rights 
are not collective but separate and distinct, as 
for instance, devices embodying the invention 
covered by a patent cannot be made abroad and 
used or sold in this country, neither can the 
invention be made in this country for sale or 
use abroad without the patentee's consent. In 
the United States the monopoly granted by the 
patent is absolute during the life of the patent 
and cannot be lost by the failure of the patentee 
to work or develop the invention. In some 
foreign countries the patentee must pay taxes 
at periodic intervals, and in most foreign coun- 
tries some effort must be made to put the inven- 
tion into public use or to "work" it. Failure to 
pay taxes or to work the patent in such coun- 
tries causes the patent to lapse. No such rule 
applies, however, in the United States. 



[9] 



A patent is not a license. — A patent is 
not a license to make anything. It is merely a 
right to exclude others from making, using or 
selling the thing claimed in the patent during 
the life of that patent. As stated by Mr. Chief 
Justice Taney, "The franchise which the patent 
grants consists altogether in the right to exclude 
everyone from making, using or vending the 
thing patented, without the permission of the 
patentee." A patentee may have a right to 
stop others from making, using or selling his 
claimed invention without having the right him- 
self to make, use or sell the invention disclosed 
in his patent. This situation frequently arises 
where an earlier patent has been granted which 
covers broadly various means for producing the 
same result. This can only occur where the 
earlier patentee is a pioneer in the field to which 
his invention relates. It must be understood 
that in the case of such a broad patent the 
claims of the patent may be so worded that the 
patent not only covers the specified form of the 
invention disclosed in the patent, but also covers 
various forms and modifications not directly 
shown* 



[10] 



Broad patent no bar to later narrow 
patents.— The fact that a broad patent has 
been granted, however, does not mean that a 
later narrower patent cannot be granted for an 
improvement over the forms of the invention 
disclosed in the broad patent, as the Patent Stat- 
ute expressly states that patents may be granted 
for any new or useful invention or any improve- 
ment thereon. 

If the later applicant can convince the Pat- 
ent Office that he has invented an improvement 
on the invention disclosed in the earlier patent, 
the Patent Office will grant him a patent on his 
improvement having claims expressing the dif- 
ference between what the later applicant dis- 
closes in his application and what is disclosed 
in the earlier broad patent. The Patent Office 
in examining an application does not concern 
itself with the question of infringement, but 
merely with the question of whether the inven- 
tion shown in the application is new and useful. 
It is the regular practice of the Patent Office to 
grant improvement patents where there are 
existing prior broad patents which contain 
claims which are infringed by the devices shown 
in the later improvement patents. 

[11] 



Result of grant of narrow patent.— 

The results of granting the earlier patent con- 
taining broad claims and then granting a later 
patent covering improvements over the inven- 
tion disclosed in the earlier patent is as follows. 

When the first or earlier patent has claims 
that cover the invention disclosed in the second 
or later patent, the second patentee cannot 
make such improvement without infringing the 
first or earlier patent. 

When the second or later patent has claims 
that cover the specific form of invention dis- 
closed therein, which must be somewhat differ- 
ent from the form shown in the broad patent, 
to result in a patent, the first patentee cannot 
make such mprovement without infringing the 
second patent, or in other words, the first pat- 
entee cannot make the specific form of the in- 
vention claimed in the later patent. 

Ownership of patent no evidence of 
right to make. — It is therefore evident that 
the fact that a patent has been issued is no rea- 
son for assuming that the patentee thereunder 
can make, use or sell the invention shown and 

[12] 



described in such patent. It may be that he 
has merely an improvement patent, and that 
the invention shown and described therein in- 
fringes one or more prior patents. 

The fact that the Patent Office issues nar- 
row patents showing inventions which infringe 
earher patents makes the determination of the 
legal effect of any patent a task for an expert 
and only a person thoroughly skilled in the art 
of interpreting patents should undertake to con- 
strue one. Patent Attorneys are often called 
on for opinions in this connection and can fur- 
nish such opinions only after an examination 
of the patent, the circumstances surrounding its 
grant, and the state of the art at the time it was 
granted. 

Large sums of money have been lost by in- 
vestors due to accepting patents at their face 
value or neglecting to consult an expert regard- 
ing their validity and scope. 

Disclosure and claims. — The failure of 

most people to understand the legal significance 
of a patent arises from the fact that the distinc- 
tion between the disclosure and the claims is not 
understood, or if this distinction is understood, 

[13] 



that the general theory of claims is not under- 
stood. We will try to make both of these 
points plain. 

Patent is a contract. — The Courts have 
adopted the view that a patent is a contract and 
have so construed a patent. As stated in 
National Hollow Brake Beam Co. vs. Inter- 
national Brake Beam Co., 106 F. 693, "A pat- 
ent is a contract, and its construction is gov- 
erned by the same canons of interpretation 
that control the construction of other grants 
and agreements." 

A patent is a written contract between the 
inventor and the public, the Patent Office acting 
as the representative of the public. It is a rec- 
ord of a bargain. The inventor has disclosed 
a secret and is given a limited monopoly in 
return. He has given something and has re- 
ceived something. What he has given, that 
is, his secret, is set forth in his patent, being 
shown with great particularity in the drawing, 
if the invention is subject to illustration, and 
fully described in the specification. The draw- 
ing and specification disclose the inventor's se- 
cret to the public. In disclosing and describing 

[14] 



his secret, the Inventor must, of necessity, in- 
clude many things that are old and which really 
constitute no part of his real invention, that is, 
his invention may relate only to a part of a ma- 
chine and to fully describe the operation of the 
invention it may be necessary to show the entire 
machine. Having shown the entire machine he 
is, therefore, required by statute to particularly 
point out and distinctly claim his invention. 
This he does by means of his claims. The 
claims define the part he has invented and de- 
fine his monopoly or what he receives just as 
the disclosure of his invention defines what he 
gives. 

Specification does not define patentee's 
rights. — The fundamental mistake made by 
many people is to read the specification and 
inspect the drawing of a patent and assume that 
all that is described or shown is the exclusive 
property of the patentee. This is not correct 
as only a very small part of the matter shown in 
the drawings and described in the specification 
may be new or covered by the claims. It is in 
the claims, and in the claims only, that we must 
look for a definition of the patentee's monopoly. 

C15] 



If the patentee has disclosed something new 
which he does not claim, he dedicates it to the 
public. It is, therefore, quite essential that 
the patentee understand the general theory of 
claims and this subject will be more fully ex- 
plained later. 

Two kinds of patents. — There are two 
kinds of patents of invention, namely utility 
patents and design patents. Utility patents are 
granted for new and useful inventions and 
design patents are granted for new and orna- 
mental designs. 

Utility patents. — Utility patents are 
granted for four general classes of invention, 
namely, an Art, a Machine, a Manufacture or a 
Composition of Matter. 

Sec. 4886 of the Revised Statutes states, in 
part, "Any person who has invented or dis- 
covered any new and useful art, machine, man- 
ufacture, or composition of matter, or any new 
and useful improvements thereof * * * may 
obtain a patent therefor." 

Kinds of utility patents. — The term 
"Art" as used in patent law covers only a lim- 

[16] 



ited meaning of the word "process" and may be 
defined as an operation performed by rule to 
accomplish a result. It is what is commonly 
called a method, or process, of doing something. 
While a principle of nature cannot ordinarily 
be patented, it is often possible to patent the 
method or process by which this principle is put 
into use. Care should be taken to discriminate 
between a method of operation or function of a 
machine and a true process which can usually be 
carried on by more than one type of means or 
machine. 

A Machine is a combination of connected 
elements movable with relation to each other, 
which when set in motion coact to produce a 
predetermined result. 

A Manufacture is an all inclusive term in- 
cluding every artificial thing resulting from 
human endeavor not a machine or a composi- 
tion of matter. 

A Composition of Matter is a combination 
of various substances which, taken together, 
form a substance having certain new and useful 
properties. Patents on compositions of matter 
protect the formulae by which the compositions 
are produced. 

[17] 



The Patent Office usually refuses to grant in 
the same patent claims on a machine and a pro- 
cess carried out by this machine so that two 
applications are usually necessary to protect 
both. 

Design patents. — Design patents are pro- 
vided for in Sec. 4929 of the Revised Statutes 
which states, in part, "Any person who has in- 
vented any new, original and ornamental design 
for an article of manufacture * * * may * * * 
obtain a patent therefor." 

Design patents, or patents for ornamental 
designs, are granted for terms of three and 
one-half (3^), seven (7) and fourteen (14) 
years. Design patents are granted for the pur- 
pose of covering the ornamental appearance of 
articles and relate to the form or surface deco- 
ration of such articles. Design patents, in cases 
where the invention is really not an ornamental 
design, are comparatively easy to obtain and 
such patents are often applied for after an appli- 
cant has tried to obtain a utility patent and has 
failed. In such cases the protection obtained 
is almost negligible, but it allows the patentee 
to mark the article "patented" and therefore 
really serves a purpose. 

[18] 



Field for design patents. — .Design pat- 
ents, in their proper field, are just as legitimate 
as utility patents, but their field is limited to 
cases in which the appearance of the thing is 
its chief value. In such cases, design patents 
are quite valuable. Further, the statutes as to 
infringement of design patents are more drastic 
than the statutes relating solely to utility pat- 
ents, there being a fixed initial liability of two 
hundred and fifty dollars for such infringement. 
So also it is not necessary that an Infringer sell 
the infringing design, the mere offering of it for 
sale being an infringing act. 

Who may apply for patent. — The stat- 
utes provide that "any person," who has in- 
vented any new and useful invention or improve- 
ment thereon, may apply for a patent. 

As stated in Wende vs. Horine, 191 F. 620, 
"Sections 4886, 4888, 4892, 4895 R. S. require 
an application by the inventor — and this regard- 
less of whether the inventor has parted with 
title to the invention or not, and notwithstand- 
ing he may even have taken steps to have the 
patent issue to his assignee when granted." 
The applicant need not be a citizen, nor need 



[19 



he be of legal age. Insane persons may apply 
through a guardian and an executor or admin- 
istrator may apply for a patent on the invention 
of a deceased person. 

An invention, being a mental conception, 
can only be produced by a natural person. A 
corporation, for example, cannot produce an 
invention. In the United States and in Can- 
ada and many other foreign countries the appli- 
cation must be made in the name of and signed 
by the inventor, although he may at the same 
time assign it to any person or corporation. In 
England, and some other countries a corpora- 
tion may apply for a patent, the theory in those 
countries being that the patent is granted as a 
reward for disclosing the invention and not for 
making it. The actual inventor, or the joint 
inventors, must sign the application in the 
United States and execute the oath, which ac- 
companies the application when the same is 
filed in the Patent Office. 

Joint inventors. — Two or more persons 
may be joint Inventors. Mere financial assist- 
ance to an Inventor does not make the one ren- 
dering such aid a joint Inventor with the true 

[20] 



inventor. To create a joint invention all the 
parties thereto must participate in its concep- 
tion. There are no definite lines established 
by law as to the extent a joint inventor must 
have participated in the actual conception of 
an invention, but all persons who have had 
some part in the conception of the invention 
are joint inventors, and must join in making the 
application for patent. 

The rule as to what constitutes joint inven- 
tion has been before the Courts on several occa- 
sions and has been adopted as stated in Warden 
vs. Fisher 11 Fed. 505, that it is not necessary 
that the idea of an invention should occur 
simultaneously to each of the joint inventors, 
but it is sufficient that one conceives and the 
other makes a suggestion essential to its suc- 
cess, and where there is joint invention, it is im- 
material in what order the suggestions or con- 
ceptions are made so that the inventors work 
together to the common end of completing a 
single invention. 

Assigned interests. — Financial assistance 
to the inventor is usually rewarded by the in- 
ventor making an assignment of an interest in 

[21] 



the patent to the party giving such assistance, 
which assignment should be recorded in the 
United States Patent Office, preferable when 
the application is filed, as all legal titles to 
United States Letters Patent are dependent 
upon the records of the Patent Office and all 
transfers affecting the title are recordable there. 

Mechanical assistant not a joint in- 
ventor. — When an inventor requires the as- 
sistance of a skilled mechanic in order to give 
physical expression to his idea, and instructs the 
mechanic as to the result which he desires to 
accomplish through mechanical means, and the 
mechanic contributes merely the usual skill of 
his calling, the mechanic does not participate in 
the invention, and is therefore not a joint inven- 
tor with the one who conceived the idea of the 
invention. 

On the other hand, if the mechanic makes 
a valuable improvement over the original plan 
suggested by the inventor, sometimes it is a diffi- 
cult question to decide whether the mechanic has 
a right to a patent on the improvement or not. 
In the case of Agawam Co. vs. Jordan, 7 Wall. 
583, it is stated as follows: "Where a person 

[22] 



has discovered an improved principle in a ma- 
chine, manufacture, or composition of matter, 
and employs other persons to assist him in carry- 
ing out that principle, and they, in the course 
of their experiments, make valuable discoveries 
ancillary to the plan and preconceived design 
of the employer, such suggested improvements 
are in general regarded as the property of the 
party who discovered the original principle, and 
may be embodied in his patent as a part of his 
invention. Where the employer has conceived 
the plan of the invention and is engaged in ex- 
periments to perfect it, no suggestions from an 
employee, not amounting to a new method or 
arrangement, which in itself is a complete inven- 
tion, are sufficient to deprive the employer of 
the exclusive property in the perfected improve- 
ment." 



23 



Chapter II. 
PATENTABILITY 



The requirements of patentability.^ 

To be patentable, a thing must be new, useful, 
and an invention. If any of these attributes 
are lacking, the alleged invention is not properly 
patentable, and, if patented, the patent is in- 
valid. While in most cases the question of 
novelty, that is, the statutory requirement of 
newness, is the most important, the other two 
requirements are equally important from a legal 
standpoint. 

Invention. — -While it may be said that to 
be patentable a thing must be an invention, it is 
not so easy to define invention nor decide 
whether a certain alleged invention is really 
an invention or merely the result of mechanical 
skill. The early decisions of the Courts, upon 

[25] 



which we now rely, were written in the early 
days of the RepubHc before we had attained 
our present state of industrial perfection. 
These decisions were written by eminent law- 
yers who had been elevated to the Bench, and, 
not having had a mechanical education, many 
things that were commonplace to the technically 
skilled seemed to them quite wonderful. It 
is not surprising, therefore, that in the early 
cases we find expressed the idea that invention 
arose from a sort of inspiration. It must be 
something, as stated by Judge Blatchford in 
Tatham vs. Le Roy, 2 Blatch 474, "over and 
beyond the skill of the mechanic and embody- 
ing the inventive element of the mind." It is 
recognized by the courts that it is not easy to 
distinguish between invention and mechanical 
skill. See New York Belting & Packing Co. 
vs. Magowan, 27 F. 362. 

It may be said that there is no positive rule 
by which the question of invention may be tested 
and that absence of invention is usually based 
upon something showing that the alleged inven- 
tion is merely the result of mechanical skill. 
The courts, in deciding questions of this kind, 



26] 



have adopted certain negative rules which have 
been applied in later cases in a process of exclu- 
sion for determining whether or not invention 
is present. This question is largely a matter of 
personal opinion, and the dividing line between 
invention and mechanical skill being so hazy, it 
is desirable to consider some of these negative 
rules to illustrate this point. 

Mechanical skill. — The first and most 
general rule is that it does not constitute inven- 
tion to exercise the ordinary skill of a mechanic. 
A carpenter may produce a flight of stairs that 
differs in appearance, dimensions, and construc- 
tion from any that have ever been made before, 
and which may be quite useful; but, if the car- 
penter, in producing the stairs, produces noth- 
ing substantially different from stairs that any 
other carpenter might produce under the same 
conditions, it may be said that the carpenter 
has exercised ordinary mechanical skill and not 
invention. 

So, also, in the case of more complex engin- 
eering problems; in the production of large 
engineering works and machines, there often 
result structures or machines that are both new 



[27] 



and useful but which do not rise to the dignity 
of invention. It may, indeed, be said that good 
engineering is the very opposite of invention, 
for the engineer applies recognised engineering 
principles, and recognised and accepted ele- 
ments, to produce his results; as long as this is 
done along the lines that any engineer would 
follow in attacking the same problem, it is not 
invention; or, in other words, the result is a 
good job of construction, and not an invention. 
It is in this phase of the subject, however, that 
the personal opinion of the person deciding the 
question plays so large a part, as what may 
seem merely good engineering, and quite ob- 
vious, to an engineer, may seem to embrace the 
highest type of invention to a judge. One very 
eminent engineer has said that there is no such 
thing as invention as opposed to mechanical 
skill, that Invention is a high order of mechani- 
cal skill and mechanical skill is a low order of 
invention. This is not, however, the view of 
the courts, who stick closely to the theory that 
invention and mechanical skill are qualitatively 
different and not mere differences of degree in 
the same thing. 

[28] 



State of the art. — The fact that an in- 
vention appears obvious after its completion, 
does not negative invention. It must be shown 
that it was obvious before the invention was dis- 
closed. We are lead, therefore, in such cases 
to investigate the "state of the art," or the con- 
dition of human knowledge regarding the par- 
ticular subject at the time the invention was pro- 
duced. It is the step in advance over the prior 
art that the inventor is entitled to monopolize, 
and the magnitude and importance of this step 
has a very important bearing on the question of 
whether the result was invention or mere me- 
chanical skill. It is quite conclusive proof of 
invention, even where the invention seems very 
obvious, to show that the need for the invention 
existed for a long period and has never been 
filled, particularly where there have been re- 
peated attempts to supply such a need without 
success. 

Mere changes in old things. — It is not 

invention to enlarge parts of old things, or to 
use old things for new but analogous purposes. 
For example, it is not invention to use a chem- 
ical commonly used to remove hair from hides 

[29] 



to remove hair from the human face; nor is it 
invention to dupHcate or multiply old parts; 
nor to substitute for one old part in an old 
combination, a mechanical equivalent thereof. 
In most cases, a mere substitution of materials 
is not invention. The latter rule, however, 
does not apply when the substitution of the 
material produces a new improved and un- 
expected result. 

A case on the border line is the case of the 
tungsten lamp. Here, a known element was 
substituted for the old carbon filament, it was 
known that higher efficiencies could be ob- 
tained by using higher temperatures and that 
tungsten stood very high temperatures, yet the 
patent on the tungsten filament was sustained 
in the United States, although not sustained in 
some other countries. Really, the question of 
substitution of material is one phase of the 
question of mechanical equivalents. 

Mechanical equivalent. — ^It was said in 
Carter Machine Co. vs. Hanes, 70 F. 865, that 
"as a general definition, a mechanical equivalent 
that may be properly substituted for an omitted 
element, device, or agency in a patented ma- 

[30] 



chine, is one that performs the same function 
by applying the same force to the same object, 
through the same mode and means of applica- 
tion." See also Burr vs. Durkee, 1 Wall. 531. 
While this decision has to do, as indeed most of 
the decisions on this point have to do, with the 
question of infringement, the same rule applies 
as to the definition of the term "mechanical 
equivelant" when we are considering anticipa- 
tion and patentability. The term is, however, 
often loosely used. Mr. Justice Grier said in 
Burr vs. Durkee, 1 Wall. 531: "The phrases 
'substantial identity,' 'equivalent,' 'mode of 
operations,' etc., are often used in such a vague 
and equivocal manner that they mystify and 
lead many to absurd conclusions, who will not 
distinguish how things differ." 

It may be said in general that one thing is 
not the mechanical equivalent of another unless 
it operates "in the same manner" or "in the 
same way" to produce the same result. 

Aggregation. — It is not invention to asso- 
ciate things which do not co-operate in some 
measure, one with the other. Such associations 
of non-co-operating elements are called aggre- 
gations. 

[31] 



An excellent example of such an aggrega- 
tion is described in the case of Grinnell Wash- 
ing Machine Co. vs. Johnson, 247 U. S. 426; 
62 Law Ed. 1 197, in which a patent for a wash- 
ing machine mechanism was held to be invalid 
as an aggregation. The patent covered a wash- 
ing machine mechanism which was adapted to 
drive both a washing mechanism inside a tub 
and a wringer on top of that tub. Although 
the wringer was operated in one direction when 
the washing machine element was idle, and in 
the other direction when the washing machine 
element was in operation, the court held the 
claims invalid as aggregations on the broad 
ground that there was no co-operation between 
the wringer and the washing machine element; 
each operated, when associated, just as they did 
alone, and neither in any way modified the oper- 
ation of the other. 

This late Supreme Court decision affirms 
the old doctrine set forth in Hailes vs. Van 
Wormer, 20 Wall. 353, and Reckendorfer vs. 
Faber, 92 U. S. 347, and many later cases. 
The lower courts have of late years shown a 
somewhat more liberal tendency towards pat- 

[32] 



ents which perhaps are aggregational, and have 
in some cases upheld patents which, if not aggre- 
gations, were very close to it. Such, for ex- 
ample, was the case of Burdett-Rountree Mfg. 
Co. vs. Standard Plunger Elevator Co., 196 
Fed. 43, and particularly Krell Auto Grand 
Piano Company of America vs. Story & Clark, 
207 Fed. 946. In the two cases, just cited, 
and particularly in the first one, the court upheld 
a patent which, while open to the objection of 
aggregation, nevertheless contained elements 
that co-operated if the operator was considered 
an essential part of the combination. For ex- 
ample, in the Burdett-Rountree case, the op- 
erator received a signal and actuated a mechan- 
ism which produced a new and useful result. 
If the signal, or the operator, or the mechanism, 
was omitted, no result was obtained. It Is, 
however, hazardous to depend on the courts 
taking so liberal a view, especially as the ques- 
tion has apparently not been settled by the Su- 
preme Court or, if settled, is squarely against 
the Burdett-Rountree case and, in a measure, 
against the Krell case. 

In contradistinction to aggregation, we have 

[33] 



the rule that a combination of old elements is 
invention. A combination being defined by Jus- 
tice Curtis in the case of Forbush vs. Cook, 2 
Fisher 669, as "to make a valid claim for a 
combination, it is not necessary that the several 
elementary parts of the combination should act 
simultaneously. If those elementary parts are 
so arranged that the successive action of each 
contributed to produce some one practical re- 
sult, which result, when attained, is a product 
of the simultaneous or successive action of all 
the elementary parts, viewed as one entire 
whole, a valid claim for thus combining those 
elementary parts may be made." 

The above rules are but a few illustrations 
of the tests which have been applied by the 
courts a sufficient number of times to have be- 
come established rules in determining the pres- 
ence or absence of invention. 

Novelty. — The question of patentability 
most often hinges on the question of whether or 
not the thing alleged to be an invention is new 
or not. If it is not new within the definition of 
the word that has been developed in patent law, 
it is not patentable. In this connection, it may 

[34] 



be said that it may be old in that it is well 
known and in use outside the United States, 
without rendering ir unpatentable in the United 
States to an inventor who invents it independ- 
ently, and who was ignorant of its existence 
abroad. If, however, this foreign use has been 
described fully in a publication published or 
distributed in the United States, that prior pub- 
lication is a bar to a patent, as will be described 
below. 

Prior printed publication. — A printed 
description which has had a general circulation 
in the United States will bar the issue of a patent 
or invalidate an issued patent if the publica- 
tion took place before the applicant or patentee 
made his invention, or if the publication took 
place more than two years before the applica- 
tion for patent was filed in the United States 
Patent Office. In the one case, the publication 
is a bar because the applicant was not the first 
inventor; and in the other case, assuming that 
he made the invention prior to the publication, 
he has lost his rights by abandonment, that is, 
by sleeping on his rights for more than two 
years, he has lost them. Such a publication, to 

[35] 



be effective, must be fairly complete; the test 
of completeness being met when the description 
is sufficient to enable one skilled in the art, to 
which the invention pertains, to make and use 
the invention. It is not necessary that full de- 
tails should be given, but there must be enough 
so that a good mechanic in that art can repro- 
duce the invention in workable form. But, 
every printed description will not serve to antic- 
ipate or invalidate, it must be shown that the 
printed matter was publicly known. In the 
case of foreign periodicals, the fact that these 
periodicals are found on file in the Library of 
Congress is sufficient to show that they were 
available and therefore public property. Trade 
publications, however, or privately printed de- 
scriptions, must be shown to have had some 
general public circulation to be effective as an- 
ticipations. 

Prior patent. — Prior patents are the most 
common forms of printed matter relied upon to 
anticipate or invalidate a patent. They are 
most often cited by the Patent Office and they 
are most often used in court. They are a con- 
venient means of showing the state of the art, as 

[36] 



copies are readily obtained and they are written 
with the special object of fully disclosing the 
invention. Foreign patents are quite as effec- 
tive a bar against the grant of a United States 
patent as domestic patents are, if these patents 
were on file in the United States Patent Office 
prior to the applicant's invention, or more than 
two years prior to the date of his application 
for United States patent. A foreign patent 
taken out by the same inventor or his assigns 
is a bar to obtaining a patent in the United 
States after one year. 

Mere applications which have not resulted 
in a patent are not a bar to the grant of a 
United States patent and abandoned applica- 
tions are without effect as anticipations. So, 
also, foreign patents that are not published are 
no bar, and the date of publication of any for- 
eign or domestic patent is the controlling date 
from which the bar starts. 

Prior use.^ Public use, if it occurred more 
than two years before the application for a pat- 
ent, is a bar to the grant of the patent and an 
excellent ground for invalidating the patent 
after issue. This use may or may not have 

[37] 



been with the inventor's knowledge or consent. 
The public use is in itself a bar whether the use 
was by the inventor or by others. The use 
must, however, have been public and it must 
have been more than an experimental use de- 
signed to test out the invention. In the case 
of EHzabeth vs. Paving Co., 97 U. S. 130, the 
patentee laid down an experimental pavement 
in the street and it was in use for more than two 
years before the patent was applied for. The 
patent was granted and sustained by the court 
on the ground that this use was necessary to 
determine the value of the invention, and that, 
while the public used and knew of the invention 
for more than two years, the patent was valid. 
So, also, abandoned experiments are not a 
bar. If a man conceives an invention and tries 
it out and, after trying it out, he does nothing 
further with it, this conception and experi- 
mental use will not serve to defeat the rights of 
another who comes forward and develops and 
perfects the invention and applies for a patent. 
Such prior attempts are classed as abandoned 
experiments, and the fact that they did not re- 
sult in any use of the invention is usually suffi- 
cient to raise a presumption that they were un- 
successful. 

[38] 



Utility. — This is a question not raised by 
the Patent Office as often as it should be and, in 
fact, it is only raised in extreme cases. A thing 
must, however, be useful to be patentable. The 
most common class of patents that are void for 
lack of utility are those in which the disclosure 
is not sufficient to produce a useful result. Such 
a patent may be absolutely inoperative, or it 
may be inoperative to produce the result sought. 
Even where, by adding well known parts, the 
device may be made to operate properly, the 
patent is invalid if there is nothing to indicate 
in the patent how this is to be accomplished. 
The rule has been stated as follows : "The pat- 
ent is void if the machine will not answer the 
purpose for which it was intended, without 
some addition, adjustment or alteration which 
the mechanic who is to construct it must intro- 
duce of his own invention, and which had not 
been invented or discovered by the patentee at 
the time his patent was issued." Burrall vs. 
Jewett, 2 Paige 143. 

The invention must be capable of some use- 
ful result. If it produces a result that is only 
injurious to the morals, health or the good order 

[39] 



of society, this is not a useful result. For ex- 
ample, machines for facilitating the commission 
of crime fall within this class. Such inventions 
are not unpatentable, however, if it can be 
shown that they also have a useful result. 

Some patents have been held to be invalid 
because the result attained was not broadly use- 
ful, as, for example, in the case of a spark 
arrester for locomotives which arrested the 
sparks, but was impractical because it tended 
to greatly interfere with the operation of the 
locomotive. Such cases are, however, rare and 
the degree of utility or, indeed, the genuineness 
of such -utility is rarely questioned. Many pat- 
ents are probably granted which are open to 
serious questions as to their patentable utility, 
such patents are rarely important, however, as 
they result in no use and never come before 
the courts or have any legal or practical effect. 

Preliminary examination. — The Patent 
Office will give no information regarding the 
patentability of an invention until a complete 
application has been filed. Rule 14 of the 
Rules of Practice states as follows : "The of- 
fice can not respond to inquiries as to the novelty 

[ 40 ] 



of an alleged invention in advance of the filing 
of an application for a patent, nor to inquiries 
propounded with a view to ascertaining whether 
any alleged improvements have been patented, 
and, if so, to whom; nor can it act as an ex- 
pounder of the patent law, nor as counsellor 
for individuals, except as to questions arising 
.within the office." After the complete appli- 
cation has been filed, it may be rejected upon 
any issued United States or foreign patent. 
Preliminary examinations are made for the pur- 
pose of determining in a general way, before 
filing a formal application, whether or not a 
patent can probably be obtained for an alleged 
invention. 

Preliminary examinations are not con- 
clusive. — Preliminary examinations are usually 
made by the Washington associate of a local 
patent attorney and are usually limited to an 
examination of issued United States patents. 
Under such circumstances, an examination of 
this kind is not at all conclusive unless the in- 
vention is extremely simple and likely to be 
found in the issued United States patents. The 
cost of making a complete examination of both 

[41] 



the United States and foreign patents is as great 
as the cost of filing the formal application for 
patent, so that it is often advisable to file the 
formal application and have the Patent Office 
pass upon the question authoritatively. 

Further, the associates may fail to find a 
patent which later is relied upon by the examiner 
in the Patent Office in rejecting the application, 
such failure being due to defective classification 
of patents in the Patent Office or to a misappre- 
hension of the associate as to relevancy of other 
patents. 

The fact that a preliminary examination 
has been made and the invention not found to 
have been patented, is no guarantee that a pat- 
ent on the invention will be granted. Prelim- 
inary examinations are not expensive and are 
usually worth all they cost and but little more. 
They have the great advantage that they can 
be quickly made and the inventor at small ex^ 
pense is thus at once given a general idea as to 
the probability of obtaining a patent. In many 
instances, could a complete examination and 
report be made to each prospective application 
prior to his application, many applicants would 



[42 



see the futility of attempting to obtain a patent 
and thereby be saved not only the cost of the 
application, but also large sums expended in 
experimental and promotion work. 

It should, however, be borne in mind that 
these examinations cannot be guaranteed to be 
complete for many reasons, and the fact that 
the invention is not found to be anticipated as 
a result of any such examination is far from 
conclusive; on the other hand, preliminary ex- 
aminations are of considerable value in the later 
preparation of a patent application, as they 
enable the attorney to more accurately word the 
claims in the application. 

A patent attorney of long practice should 
be able to give a fairly accurate off-hand opinion 
as to the patentability of inventions submitted 
to him. Such an off-hand opinion is, however, 
strengthened if the attorney has at hand avail- 
able facts which bear on the subject; that is, 
particularly if similar inventions in the same or 
analogous arts have previously come to his 
notice. 

An opinion based on a preliminary examina- 
tion, while better than an off-hand opinion, is 



43] 



not in any sense conclusive, as has been pointed 
out under that subject. 

Where it is important that a good patent 
is to be obtained, as for example, where large 
investments are to be made, and where litiga- 
tion may result, it is most important that a thor- 
ough investigation be made. This investigation 
is of value in direct proportion to the thorough- 
ness with which the art is searched. All prior 
patents on the subject should be examined and 
an investigation into the publications on the 
subject should be undertaken. Also persons 
skilled in the art should be interviewed and the 
standard machines, processes or methods then 
in common use should be studied. With this 
data, a good opinion can usually be rendered 
upon which one can go ahead and base an in- 
vestment. 



[44 



Chapter III. 



PATENT APPLICATIONS 



Applications made to Patent Office.— 

Application for Letters Patent of the United 
States, both utility and design, are made to the 
Commissioner of Patents in the United States 
Patent Office at Washington, D. C. See Rules 
of Practice, Rule 30, page 11. The applicant 
may prepare, and file, his own application and 
thereafter conduct the correspondence usually 
necessary to secure an allowance, but the Patent 
Office recommends and prefers to have the 
inventor employ a registered patent attorney. 
Attorneys at law in general practice may be ad- 
mitted to practice before the Patent Office, 
either for the purpose of filing and prosecuting 
a single application or for general purposes. 

[ 45 ] 



Canadian and other foreign applica- 
tions. — Applications for Canadian patents are 
made to the Canadian Patent Office at Ottawa. 

Applications for other foreign patents must 
be made, usually through associate counsel lo- 
cated in the respective foreign countries. 

Caveats. — The Caveat Law was repealed 
in July, 1910, and it is no longer possible to file 
a caveat. The only official notice that the 
United States Government will take of an in- 
vention is through the filing of an application 
for patent in regular form, and no examinations 
as to the novelty of an invention will be made 
by the Patent Office until an application is reg- 
ularly filed thereon. 

Formal parts of U. S. application. — 

A complete application for patent consists of: 

( 1 ) A petition to the Commissioner of 
Patents praying for the grant of the Letters 
Patent. 

(2) A specification fully describing the 
invention. 

(3) A drawing, when the invention admits 
of illustration, showing the best method or 

[46] 



form of the invention and showing its appli- 
cation. 

(4) An oath declaring the applicant to be 
the first inventor of the invention claimed. 

( 5 ) Government filing fee. 

Model. — A model is no longer required 
except in rare cases. 

It is important that the application be care- 
fully prepared, as a proper presentation of the 
case before the Patent Office materially assists 
in an early and successful termination of the 
prosecution of the application, resulting in the 
granting of the patent. 

The Rules of Practice of the United States 
Patent Office state that "An applicant, or an 
assignee of the entire interest, may prosecute 
his own case, but he is advised, unless familiar 
with such matters, to employ a competent pat- 
ent attorney, as the value of patents depends 
largely upon the skillful preparation of the spec- 
ification and claims." 

Specification. — The specification must 
consist of a full and detailed description of the 
invention, which must be described in the appli- 

[47] 



cation so that the public will have full knowl- 
edge from the patent itself of how to practice 
the invention upon the termination of the pat- 
ent. A patent having a specification which 
does not fully and completely describe the inven- 
tion is invalid. 

It requires considerable experience to write 
a good specification. While it is quite essential 
that the specification fully describe the inven- 
tion yet this does not mean that every bolt must 
be mentioned or that wearisome details be in- 
dulged in. The specification has two main 
purposes, one, to fully disclose the invention to 
the public so that the invention can be put to 
practical use, and the other, to so present the 
important points of the invention to the Exam- 
iner, so that he can readily understand its value 
and importance without excessive labor on his 
part. Both purposes must be kept constantly 
in mind. The specification must also lead up 
to and form a valid basis for an explanation of 
the claims and any technical or special words 
or phrases used therein. 

The statutes not only require the inventor to 
fully describe his invention in the specification, 

[48] 



but also state that he shall particularly point 
out and distinctly claim the part improvement, 
or combination which he claims as his invention 
or discovery. It frequently happens that it is 
necessary to show in the drawings and describe 
an entire machine or structure in an application 
for patent when the invention relates to only a 
part of such disclosure, under which circum- 
stances the claim or claims point out the partic- 
ular part which the Inventor claims as his inven- 
tion. The patent is a notice to the public of the 
monopoly granted and the claims in the patent 
define the extent of the monopoly. 

Claims. — The claims should not be con- 
fused with the description of the advantages or 
points of superiority of the invention usually 
placed at the beginning of the specification. 
Claims are technical and concise statements of 
the physical nature of the invented thing, and 
are placed at the end of the specification which 
serves as a sort of introduction to them. 

The claims of the patent are the very life 
of the patent, and if the patent has good claims 
it is a good patent, and if It contains poor claims 
it is of little value. The inventor is dependent 

[49] 



to a great extent upon his patent attorney to 
properly present the claims and the main por- 
tion of the correspondence with the Patent 
Office relates to the allowance of the claims. 

Claims cover combinations of elements. 

— ^A claim is a definite description of an inven- 
tion, a sort of catalog of the combination of 
elements that, taken together, make up the new 
and useful invention which the applicant claims 
the right to exclude others from making, using 
or selling during the life of the patent. Any- 
thing which the claim accurately describes is an 
infringement of the claim, but generally speak- 
ing, the alleged infringement must have every- 
thing called for in the claim and the elements 
of the claim must be found in the alleged in- 
fringing thing and must be associated as de- 
scribed in the claim. If there is anything in 
the claim not found in the alleged infringing 
thing, that thing is not an infringement and the 
patentee cannot prohibit the manufacture, sale, 
or use of that thing. But the alleged infringe- 
ment may have other elements besides the ele- 
ments claimed and still be an infringement. 

[50] 



You cannot avoid a patent by tacking something 
on the invention claimed in that patent. 

Broad and Narrow claims. — Those 
claims are ordinarily the most valuable which 
contain general expressions which include the 
greatest number of variations. Such claims are 
commonly termed "broad" claims. To be broad 
a claim should not specify elements which may 
be omitted without destroying the usefulness 
of the thing nor should they contain words or 
phrases which limit the invention. Broad 
claims use general expressions like "means for 
securing," rather than narrow expressions such 
as "a bolt having a castellated nut." Obvious- 
ly, a claim specifying "a bolt having a castel- 
lated nut" as a means for securing certain of 
the other elements of the claim together would 
not describe something fastened together with a 
rivet. Obviously, also, the expression "means 
for securing" describes a bolt, rivet, or any 
means by which the parts may be fastened to- 
gether. A claim made up of elements broadly 
and generally described, such for example as 
''means for securing," is a broad claim and val- 
uable. A claim having a definite and narrow 

[51j 



wording is usually a valueless claim as it can be 
easily avoided by substituting something else 
for such narrowly defined parts. 

It is not hard to illustrate and describe a 
machine. Most inventors can make a drawing 
and write a description, but it is often a difficult 
matter to frame proper claims and a harder 
matter to get the Patent Office to allow them. 
The drafting of claims and obtaining their 
allowance is the patent attorney's hardest task 
and one not often appreciated where the client 
does not understand the theory and structure of 
claims . 

"The scope of every patent is limited to the 
invention described in the claims contained in 
it, read In the light of the specification. These 
so mark where the progress claimed by the pat- 
ent begins and where it ends that they have 
been aptly likened to the description in a deed 
which sets the bounds to the grant which it con- 
tains." Motion Picture Patents Co. v. Univer- 
sal Film Mfg. Co. 243 U. S. 502. 

Each claim stands or falls alone. — A 

patent may have one or several claims and each 
claim is, in effect, a monopoly in itself. Each 

[52] 



claim stands or falls alone and is really a pat- 
ent in itself. It is highly desirable to have sev- 
eral claims of varying breadth, but the courts 
have repeatedly condemned patents having a 
multiplicity of nebulous claims on the ground 
that they were not in accordance with the law 
that requires an inventor to "particularly point 
out and distinctly claim" his invention. One 
can, therefore, have too many claims and they 
may be too broadly written. It is only by expe- 
rience that an attorney learns the golden mean. 

"Under the policy of the patent law, in or- 
der to jRx the boundaries of a patented invention 
by distinct and formal claims, it is necessary to 
make a clear analysis of the subject, and often 
to use much refinement of speech in pointing 
out the various utilities affected by the elements 
described. But where such refinement of lan- 
guage is directed to describing trivial differ- 
ences existing between possible combinations of 
the various elements involved, it does not aid 
the court in an interpretation of the patent, and 
is of no service to the public, after the patent 
has expired, in giving information relating to 
the scope of the invention which has become a, 

[53] 



public benefit." Adt. v. Bay State Optical Co., 
226 F. 925, 934. 

Drawings. — -The standards of the Patent 
Office as to drawings are extremely high and the 
average mechanical draftsman, unless he has 
had special experience in making such drawings, 
will not usually produce work acceptable to the 
Patent Office. Moreover, the drawings are in- 
tended as illustrations, not working drawings, 
and a highly trained patent draftsman is able 
to accentuate important features and thus make 
the true nature of the invention immediately 
evident. 

Patent attorneys usually have in their em- 
ploy skilled draftsmen who prepare these illus- 
trations working from sketches, drawings, 
models, or the actual device. 

Clear and striking drawings are of the 
greatest assistance in getting a prompt allow- 
ance of the patent with the proper claims as 
they greatly assist the officials in the Patent 
Office. These officials appreciate a well writ- 
ten and well illustrated case and show their 
appreciation by a hearty co-operation with the 
attorney. 

[ 54 ] 



Moreover, clear and convincing drawings 
are of great value after the patent is issued as 
they greatly assist both the public and the courts 
in understanding and interpreting the patent. 

Patent Office fees. — The Patent Office 
fees in the ordinary prosecution of an applica- 
tion for patent are : First, a Government Filing 
Fee, which is paid into the Patent Office when 
the application is filed and which is not refunded 
whether patent is granted or not. Second, a 
Final Fee, which is only payable in the event 
the Patent Office finds that the invention is pat- 
entable. 

In the prosecution of applications where un- 
usual proceedings are necessary, such as Inter- 
ference Proceedings, Appeals to the Board of 
Examiners-in-Chief or to the Commissioner of 
Patents, additional fees must be paid into the 
Patent Office. 

For Design Patents, the only fees payable 
to the Patent Office are Filing Fees, which de- 
pend on whether the patent is for three and one- 
half (3^) years, seven (7) years, or fourteen 
(14) years. 



[55 



Attorney's fees. — Attorney's fees are es- 
timated upon the character of the application, 
the amount of drawing necessary, and time re- 
quired in preparation, and are payable in addi- 
tion to the Patent Office fees enumerated above. 

Examination by Patent Ofl&ce.— While 

great care should be exercised in the prepara- 
tion of the patent application, and while a care- 
fully prepared application is a material factor 
in obtaining a good patent, it is equally true 
that a great amount of time and attention must 
be given to the application by the attorney while 
the application is pending in the Patent Office 
if a broad and valid patent is to be obtained. 
When the complete application is filed in the 
Patent Office it is given a Serial Number, and 
then placed, for the purpose of examination, 
in charge of one of the Examiners who is a 
specialist in the class of inventions disclosed in 
the application. After the Examiner has read 
and considered the description and drawings 
of the application he then examines the claims 
for the purpose of ascertaining just what the 
applicant claims as his invention. To be pat- 
entable the matter claimed must be new, useful 

[56] 



and the production of it must amount to inven- 
tion. The question of usefulness is rarely 
raised as a bar to an application. To deter- 
mine if the matter claimed be new the Examiner 
searches through issued United States and for- 
eign patents, and through printed publications. 
If he finds either patents, or printed publica- 
tions, which disclose substantially the subject 
matter of the claims of the application, or if 
he believes that to produce the subject matter 
of the claims did not involve invention, the 
claims are rejected. 

Amendments by attorney. — The actil^n 
taken by the Examiner, stating his reasons for 
rejection, is communicated to the applicant's at- 
torney by letter, and copies of the patents or 
printed publications referred to in the Exam- 
iner's letter are obtained, by the attorney, from 
the Patent Office and carefully studied. The 
claims may be amended, new claims inserted, or 
claims cancelled, accompanied in each case, how- 
ever, by arguments embracing the reasons for 
such amendments. No new matter can be in- 
serted in an application after the same has once 
been filed, although any manifest errors either 



57 



in the description or drawings may be corrected. 
That is, the construction shown in the drawings 
cannot be changed nor can a description of any- 
thing not found in the application as filed be 
added. "An applicant in his endeavor to pro- 
tect his invention may amend the specification 
and claims so long as he keeps within the re- 
quirements of the statutes and the Rules of the 
Patent Ofiice ; but he cannot be permitted at any 
time to introduce new matter into his applica- 
tion and obtain therefor a date as of the date of 
the original application." 115 O. G. 1067. 
For this reason an applicant should present his 
invention in its complete and best adaptation 
and if improvements are made after filing the 
original application, such improvements should 
form the basis for new applications. 

Reconsideration by Patent Office. — 

After the filing of an amendment or other ac- 
tion by the attorney, the application is again 
examined and considered by the Examiner in 
the light of such amendment or action. These 
alternate actions by the Examiner and the attor- 
ney are repeated until the claims cover only 
patentable subject-matter, the application then 



[58 



being finally allowed, or until the Examiner and 
the attorney reach an issue which results in the 
final rejection of one or more claims. 

Time required to get allowance. — While 
in some cases, the patent can be obtained in a 
few months after filing, it often happens that 
certain divisions of the Patent Office are some- 
what behind with their work, and this necessa- 
rily delays the prosecution of the case. The 
time required for obtaining a patent depends 
largely on the number of applications for sim- 
ilar inventions which are copending with it in 
the Patent Office. If the work is properly done 
and the various important points are thoroughly 
discussed with the Patent Office, the prosecu- 
tion of the case must necessarily take some time. 

Careful prosecution by attorneys is nec- 
essary. — Bearing in mind that the claims of a 
patent are the vital part, the value of the pat- 
ent finally obtained depends largely on the pros- 
ecution of the application, and in order that cli- 
ents may be fully informed as to the progress 
of their applications in the Patent Office, attor- 
neys of standing always furnish their clients a 

[59] 



complete copy of the application and drawings 
as filed, and with a copy of all correspondence 
had with the Patent Office in relation to their 
respective applications. 

Moreover, to obtain claims which will fully 
protect the patentee, it is highly desirable that 
the attorney have frequent consultations with 
his client and that the client take an active and 
intelligent interest in the case. Many patents 
are issued with inadequate claims merely be- 
cause the attorney did not appreciate fully the 
importance of certain features of the invention, 
due to the fact that the inventor never properly 
explained it. 

If an invention is worth patenting, it is 
worth a carefully prepared specification and 
claims and worth a careful prosecution in the 
Patent Office, Speed usually means careless 
work and patents which are quickly obtained are 
usually without proper claims. Unless the pat- 
ent attorney writes good claims and urges 
their allowance, the patent will be valueless for 
the Examiner rarely suggests claims. 

Personal visits to Patent Office rarely of 
value. — In the ordinary prosecution of patent 

[60] 



applications all of the work in connection there- 
with is done in the patent attorney's office and 
under his personal supervision. The rules of 
the Patent Office require that all communications 
relating to applications for patent be in writing 
and personal interviews with Examiners do not 
ordinarily facilitate the prosecution of the appli- 
cation, and if had, must be supported by a writ- 
ing duly filed in the case. Interviews with the 
Examiner in charge of the application are at 
times desirable, but are only necessary in rare 
cases, and personal visits to the Examiner 
should not be made unless absolutely necessary. 

It sometimes becomes evident, however, 
that the Examiner does not understand the con- 
struction, method of operation, or merits of the 
invention. While such matters may be ex- 
plained by letter it is often profitable to have 
the attorney, or an associate selected by him to 
visit the Patent Office and discuss the case in 
detail with the Examiner. If this discussion 
is supported by a demonstration of the inven- 
tion, it generally has great weight with the Ex- 
aminer and considerably expedites the progress 
of the case. Oftentimes also, the Inventor 

[61] 



himself is able to so explain his invention to the 
Examiner as to obtain an allowance, but it is 
desirable for the inventor to be accompanied 
by his attorney or the attorney's Washington 
associate on any visits he makes to the Patent 
Office, unless he fully understands the rules and 
customs of the Patent Office. 

Divisional applications. — Only one in- 
vention can be covered in a single application. 
Where two or more independent inventions are 
claimed in one application, the Patent Office will 
require that the application be limited to a single 
invention. The other invention or inventions 
can then be covered by supplemental applica- 
tions known as divisional applications. Divis- 
ional applications are to all intents and pur- 
poses new applications, which are considered, 
however, as dating back to the date of the orig- 
inal application. 

The line between independent and related 
inventions is not clear and it is not possible to 
lay down any general rule which would be ap- 
plicable to all cases, the Patent Office, however, 
has adopted a rule (see Rule 41, Rules of Prac- 
tice) which reads as follows: "Two or more 

[62] 



independent inventions can not be claimed in 
one application; but where several distinct in- 
ventions are dependent upon each other and 
mutually contribute to produce a single result, 
they may be claimed in one application." 

The work and expense of filing and prose- 
cuting a divisional application is the same as in 
the case of an ordinary application of the same 
character. 

Appeals. — When any claim in an applica- 
tion has been twice rejected by the Examiner 
for the same reason, an appeal may be taken 
to the Board of Examiners-in-Chief. From an 
adverse decision of the Examiner-in-Chief an 
appeal may be taken to the Commissioner of 
Patents in person, and an appeal from an ad- 
verse decision by the Commissioner of Patents 
may be taken to the Court of Appeals of the 
District of Columbia. Further appeals and 
proceedings may be undertaken in other Fed- 
eral Courts, but such proceedings are quite un- 
usual. In general, appeals are rarely neces- 
sary, as a careful and painstaking prosecution 
of applications before the Primary Examiner 
is ordinarily effective in securing the allowance 

[63] 



of any claim or claims to which the inventor is 
fairly entitled. 

Patents resulting from applications which 
have been appealed to the higher tribunals of 
the Patent Office are usually considered to be 
stronger than those granted by the Primary 
Examiners, on the theory that they have been 
more carefully considered in the Patent Office 
and hence are most likely to have been properly 
granted than those granted as a matter of gen- 
eral routine by the Primary Examiners. 

While appeals should only be undertaken 
after an exhaustive effort before the Primary 
Examiner, they should not be shirked when 
really necessary. In some cases the Primary 
Examiner takes an erroneous viewpoint of the 
invention and it is only by an appeal that an 
inventor can secure his rights. In cases where 
the Examiner persists in rejecting claims which 
the attorney thinks are allowable, the attorney 
should advise his client to appeal rather than to 
cancel such claims and thus waive his client's 
rights thereto. 

Every appeal involves the writing of com- 
prehensive briefs and in most cases involves 

[64] 



the personal appearance of the attorney or an 
associate at the hearing. The Examiners-in 
Chief are exceptionally able men and are per- 
fectly competent to thoroughly understand cases 
brought before them and to act intelligently 
thereon. 

Appeals to the Commissioner are usually 
decided by an Assistant Commissioner who is 
selected on account of his fitness for the posi- 
tion. 

Appeals to the Federal Courts from the 
tribunals of the Patent Office are most unusual 
and quite outside the scope of this book. 

Procedure after allowance. — Within six 
months after the date of the formal notice of al- 
lowance of an application the final Government 
fee must be paid. The application is then 
passed to the issue division of the Patent Office, 
and Letters Patent, signed by the Commissioner 
of Patents and sealed with the seal of the Pat- 
ent Office, are delivered to the attorney. 

The time required for the printing, signing 
and sealing of a patent, after the final Govern- 
ment fee has been paid, usually consumes the 
better part of six weeks. 

[65] 



Immediately upon receipt of notice of allow- 
ance, the applicant should decide whether or 
not he desires to file patent applications in for- 
eign countries as the issue of the United States 
patent will sometimes act as a forfeiture of 
foreign rights. 

In the event the final fee is not paid within 
six months from the date of allowance, the 
patent becomes forfeited but can be revived as 
explained under "Forfeited Applications." 



[66] 



Chapter IV. 
INTERFERENCES 



Interferences. — An interference is a pro- 
ceeding instituted in the Patent Office to deter- 
mine the question of priority of invention be- 
tween two or more applicants claiming the same 
patentable invention, or between an applicant 
and a patentee of an unexpired patent, when the 
applicant can show that he made the invention 
covered by his application prior to the date of 
the application from which the patent resulted, 
the invention claimed in the application and the 
invention covered by the patent being substan- 
tially identical. 

Preliminary statement.— The first step re- 
quired in interference proceedings is the filing 
of the preliminary statements of the rival in- 
ventors setting forth dates tending to prove 

[67] 



when the invention was actually made. The in- 
terference is often decided without the necessity 
for further procedure, due to one party or the 
other refusing to contest the interference on 
account of the facts disclosed in the prelim- 
inary statements, in which case the expense is 
small. If the interference is contested, how- 
ever, the proceedings partake of the nature of 
a law-suit requiring the taking of testimony and 
the preparation of briefs, which involves con- 
siderable expense. 

Issues. — There are usually two main Issues 
in an interference, namely, the date of concep- 
tion, and the date of reduction to practice. It 
is often very hard to prove dates of conception, 
as inventors rarely keep properly dated records 
of such matters. 

Reduction to practice may occur either 
through an actual making and successful test- 
ing of the invention which is a real reduction 
to practice, or it may occur through the filing 
of an application for letters patent, which is a 
constructive reduction to practice. 

The general rule is that the Inventor first 
to conceive Is entitled to a patent, provided he 

[68] 



has been reasonably diligent in reducing to prac- 
tice. One cannot expect to conceive an inven- 
tion and cast it aside and then prevail against 
someone who independently conceives the in- 
vention and proceeds to reduce it to practice. 

Interference with issued patent. — 

Where an interference is declared between a 
pending application and an issued patent, which 
cannot occur after two years from the date of 
the patent, and where the applicant is found to 
be the first inventor, the Patent Office may issue 
a patent to the applicant although it has no 
power to cancel the patent already issued. The 
first patent being an improperly issued patent 
may, however, by a suitable procedure, be de- 
clared void, inoperative, or invalid by a Fed- 
eral Court, there being a statute relating to re- 
lief in case of such interfering patents. 

Success in winning interference proceedings 
depends in many cases on being prepared to 
prove the facts involved and this emphasizes 
the importance of keeping all records concern- 
ing the conception and development of the in- 
vention. 

The importance of keeping a record of the 

[69] 



invention cannot be too strongly emphasized 
as it is the proof of dates that largely controls 
the decision of the Patent Office in interference 
proceedings. For his own protection, an in- 
ventor should preserve all sketches, models, 
bills for material and other data connected with 
the production of the invention and the disclos- 
ure of the invention to other persons. 

Motions. — After the preliminary state- 
ments are opened the Patent Office usually 
allows thirty days during which it is in order for 
any party to the interference to make certain 
motions such as a motion to shift the burden of 
proof, or motions to dissolve the interference 
on ground that there has been such an infor- 
mality in declaring the interference as to pre- 
clude a proper determination of the question 
of priority, or on the ground of non-patenta- 
bility of the issue, or the ground of a denial of 
the right of any party to make the claim in in- 
terference or the ground that there is no inter- 
ference in fact. If any such motion is made by 
any party it is set down for hearing in the Pat- 
ent Office before the proper official, usually a 
Law Examiner. At the hearing every party to 

[70] 



the interference may be represented by attor- 
ney or may be present in person and briefs are 
usually filed setting forth the grounds upon 
which the motion is made or resisted. If the 
interference is not dissolved the parties then go 
ahead and take testimony to prove their respec- 
tive claims. 

Testimony. — The taking of testimony in 
interference cases is by deposition. That is, it 
is taken out of court and without the presence 
of a supervising judicial officer who can control 
the nature of the questions asked or the pro- 
cedure adopted. It is usually taken steno- 
graphically before a notary who may con- 
veniently be the stenographer. Such deposi- 
tions may be taken anywhere upon written and 
sufficient notice to the other side and all the par- 
ties may attend and cross-examine. The taking 
of such testimony is tedious and expensive and 
may drag on for days or weeks. After having 
been taken and reduced to writing and sworn to 
it is forwarded by the notary or other officer 
taking it direct to the Patent Office. Any ex- 
hibits offered in evidence are also forwarded by 
the notary or other officer to the Patent Office. 

[71] 



The testimony is directed to prove the allega- 
tions in the preliminary statements which are in 
the nature of pleadings by which each party is 
bound. 

Each party has an opportunity to take tes- 
timony the last to file his application for patent 
being given the first opportunity as the burden 
of proof is on such party. After all the par- 
ties have been given an opportunity to take tes- 
timony they are then given an opportunity to 
take rebuttal testimony which they take in re- 
verse order the last to file having the last oppor- 
tunity to offer rebuttal testimony. The time 
allowed to take direct testimony is usually a 
month for each party and the time to take re- 
buttal is usually fifteen days. These times 
may be extended by consent or order in compli- 
cated cases and the time for taking thereby 
extended. 

Printing. — Before the final hearing each 
party prints his testimony, which is quite expen- 
sive, and supplies enough copies so that each 
party has a printed copy and there are enough 
in addition for the Patent Office and the higher 
tribunals therein as well as the court if the case 
is appealed from the Patent Office. 

[72] 



Final hearing. — After the testimony is all 
in, the case may be argued upon a day set, and 
briefs filed. The Examiner of Interferences 
then considers the evidence in view of the argu- 
ment and the briefs filed and decides the inter- 
ference. From his decision the usual appeals 
may be taken. 

In general. — Interferences are protracted, 
expensive, and complicated. They are de- 
signed to insure that patents are only granted 
to the first and true inventor, but, in many 
cases, an interference proceeding is a hardship 
on the poor inventor due to the additional 
expense required, especially in protracted cases. 
Moreover during the time an interference is 
going on the inventor has no protection unless 
he has been so fortunate as to have his patent 
issued prior to the declaration of the interfer- 
ences. 



[73] 



Chapter V. 

RENEWALS, REISSUES, EXTENSIONS, 
ETC. 



Reissues. — To obtain a reissue, two im- 
portant requirements are necessary; first, that 
the error must have arisen by inadvertence, ac- 
cident or mistake ; and second, that the new or 
reissue patent must be for the same invention. 

Reissue patents may contain narrower or 
broader claims, but in the latter case, when a re- 
issue patent containing broader claims comes 
before a Court, it will be scrutinized more care- 
fully than in the case of a reissue containing 
narrower claims. In Miller vs. Brass Co., 140 
West 350, the Court said: "We think it clear 
that it was not the special purpose of the legis- 
lation on the subject to authorize the surrender 
of patents for the purpose of reissuing them 
with broader and more comprehensive claims, 

[75] 



although, under the general terms of the law, 
such a reissue may be made where it clearly ap- 
pears that an actual mistake has inadvertently 
been made." The Court in the same case also 
said: "Reissues for the enlargement of claims 
should be the exception and not the rule." In 
Topliff vs. Topliff, 145 U. S. 156, with respect 
to reissue patents having broader claims, the 
Court said: "Due diligence must be exercised 
in discovering the mistake in the original patent, 
and, if it be sought for the purpose of enlarging 
the claim, the lapse of two years will ordinarily 
though not always, be treated as evidence of an 
abandonment of the new matter to the public 
to the same extent that a failure by the inventor 
to apply for a patent within two years from the 
public use or sale of his invention is regarded 
by the statute as conclusive evidence of an aban- 
donment of the invention to the public." In 
the case of reissue patents containing broader 
claims, intervening rights may arise between the 
issue of the original patent and the date of filing 
of the application for reissue which may inval- 
idate the reissue patent, even though such re- 
issue patent is allowed by the Patent Office. 

[76] 



For this and other reasons reissues are 
somewhat hazardous and applicants should as- 
sure themselves that their original applications 
are properly drawn and prosecuted and thus 
avoid the necessity of reissue. If a patentee 
has any doubt concerning the claims secured 
in his patent he should immediately consult a 
competent attorney and assure himself that he 
has obtained all that he is entitled to in the way 
of claims and if he jfinds his patent defective 
should at once apply for a reissue. 

Correction of errors in letters patent.— 

Errors in a patent, incurred through the fault 
of the Patent Office, will, upon demand, be cor- 
rected by the issue of a certificate of correction 
which is attached to the patent and to the printed 
copies furnished by the Patent Office. 

Errors in a patent, incurred through the 
fault of the Patent Office, which cannot be cor- 
rected by certificate of correction, may be cor- 
rected upon demand and without charge, by the 
reissue of the patent. 

Such errors must, however, be clearly the 
fault of the Patent Office and in such cases cor- 
rection is made without charge. Immediately 

[77] 



upon receipt of a patent it should be carefully 
checked to see no such error has been com- 
mitted. 

Disclaimers. — If a patentee find himself 
in possession of a patent having several claims 
some of which he is certain are invalid as claim- 
ing more than that of which he was the inventor 
he should at once file a disclaimer of the invalid 
claims as failure so to do will defeat his rights 
to costs in any subsequent suit for infringement; 
or in case he unreasonably neglect to file such a 
disclaimer he may be barred from maintaining 
such suit. 

It is required that such disclaimers shall be 
in writing and filed in the Patent Office, The 
disclaimer is then considered as a part of the 
original specification. "Matters properly dis- 
claimed cease to be a part of the invention; and 
it follows that the construction of the patent 
must be the same as it would be if such matters 
had never been included in the description of 
the invention or the claims of the specification." 
Dunbar vs. Mayers, 94 U. S. 187. 

Revival of abandoned applications. — 

The rules of practice provide that after a re- 

[78] 



jection of the claims the applicant is given one 
year to amend his application. If he fails to 
do this his application becomes abandoned and 
can only be revived by filing a new application, 
in which case the drawings of the original appli- 
cation may be used. Such an abandonment 
may prove a serious matter where other inven- 
tors have entered the field. 

Revival of forfeited applications.— 

If after a patent is allowed the final fee is not 
paid within six months from the date of allow- 
ance the application becomes forfeited. To 
revive a forfeited application one must pay a 
new filing fee within two years from the date 
of allowance and also file a petition for re- 
newal. If an application is forfeited more 
than once it can only be renewed in the event 
that a petition of renewal is filed within two 
years from the date of first allowance. 

Forfeiture is not as serious as abandonment 
but conditions may arise where serious losses 
may occur due to such forfeiture. 

Extensions. — Utility patents are granted 
for a term of seventeen years and can only be 
extended by special act of Congress. 

[79] 



Chapter VI. 

RELATIONSHIP OF PATENTEE WITH 
OTHERS 



Marking patented. — Articles covered by 
Letters Patent should be marked "PAT- 
ENTED," followed by the date or number of 
the patent. Unless this is done it is necessary to 
personally warn each infringer, and in such 
cases where the patentee has failed to mark, 
damages can only be recovered from the date 
of such warning. There is a heavy penalty for 
wilfully marking articles "Patented," or words 
to that effect for the purpose of deceiving the 
public, when the person so marking the article 
is not the patentee, or has not been authorized 
so to do by the patentee or someone holding 
under him. 

Patent applied for.^The words "PAT- 
ENT APPLIED FOR," or "PATENT 

[81] 



PENDING," are ordinarily placed on articles 
which are covered by an application pending in 
the United States Patent Office. While an in- 
ventor has no rights which he can enforce until 
his patent has been issued, the use of the term 
"PATENT APPLIED FOR" is often of very 
real practical value, inasmuch as it indicates to 
other manufacturers that the inventor is seek- 
ing protection and that he expects a patent to 
issue which will adequately protect him. All 
applications filed in the Patent Office are confi- 
dential, and it is impossible for parties, other 
than the inventor and his attorneys, to find out 
the status of any application pending before the 
Patent Office. For this reason manufacturers 
hesitate to manufacture an article marked 
"PATENT APPLIED FOR" unless author- 
ized by the inventor. 

Abandoned inventions. — The first inven- 
tor has presumptively a right to the entire in- 
vention and to any patent which may issue 
thereon. The inventor's title may, however, 
pass from him either before or after he makes 
his application either by his voluntary act or 
due to his failure to perform some necessary 

[82] 



act. He may, for example, neglect to reduce 
the invention to practice and thus abandon it, 
or he may neglect to file an application within 
two years from the first public use or neglect 
to prosecute his application for more than a 
year after it has been acted on by the Patent 
Office or to pay the final fee within two years 
from the date of allowance, and thus aban- 
don It. 

Shop right. — The inventor may by his use 

of his employer's materials and tools in the pro- 
duction of his invention grant to that employer 
a shop right. 

Undivided interest. — The most common 
right in a patent is an undivided right to some 
portion thereof. Where two or more persons 
have such undivided rights in any patent they 
are not, in the absence of an agreement to that 
effect, partners. One is not accountable to the 
other in any way for his acts under the patent. 
He may make, use and sell the patented inven- 
tion without responsibility to his co-owners and 
may grant licenses to others to do the same. 
He cannot, however, grant an exclusive license 
or an entire assignment of the patent nor main- 

[ 83 ] 



tain a suit under the patent without the co- 
operation and consent of all his co-owners. 

In the case of Blackledge vs. Weir & Craig 
Mfg. Co., 108 F. 71, the Court said: "On 
principle, therefore, there can be no accounta- 
bility on the part of a part owner of an inven- 
tion to other owners for profits made by the ex- 
ercise of his individual right, whether it be by 
engaging in the manufacture and sale, or by 
granting to others licenses or by assigning in- 
terests in the patent. His use of the invention 
in any lawful way is not an appropriation of 
anything which belongs to another. The sep- 
arate rights of the other owners remain 
unaffected. They are equally free to use the 
invention in all legitimate ways for their 
individual profit. Each is entitled to the fruits 
of his endeavors, taking no risk and expecting 
no reward from enterprises in which he does 
not choose to join." 

Patent rights. — It is possible for a pat- 
entee to grant to others rights under the patent 
which are of varying scope. He may, for ex- 
ample, assign all of his rights to another or he 
may grant a limited right. This right may be 



[84] 



limited in various ways. He may grant the 
right to sell and use but not to make, or he may 
grant the right to make and use but not to sell. 
The right may be for the entire term of the pat- 
ent or for any lesser times and may be co- 
extensive with the United States or limited to 
any portion thereof. Various considerations 
may be exacted. The patentee may sell for a 
gross sum or he may take a royalty. In the 
latter case he may or may not exact a yearly or 
monthly minimum, and he may or may not add 
certain requirements as to serially numbering 
the articles sold or affixing name plates or seals 
furnished by the patentee. 

Interest in invention only. — The paten- 
tee may also sell undivided interests in the pat- 
ent or in a pending application or in an inven- 
tion for which no application has been made. 
Or he may sell a portion of his expected profits. 

Forms. — The forms which rights under 
patents may take are extremely varied. Attor- 
neys having an extensive experience in patent 
law usually have a full understanding of the 
best methods of handling such matters and can 

[85] 



often offer very valuable suggestions as to the 
form the grant or lipense should take. They 
are also familiar with the necessary precautions 
needed to make any such a grant or license fair, 
legal and operative and can draw contracts 
which are operative and enforceable in both the 
state and federal courts. 

Assignments. — Patent rights are peculiar 
in their nature, and any assignment of a patent 
or interest therein, or any contract relating to 
the manufacture, sale or use of inventions, 
whether patented or not, shouM be carefully 
prepared. All such instruments should be in 
writing and due proceedings taken for the prop- 
er recording of such of these instruments as 
may be recorded under the law. 

Sec. 4898 R. S. reads In part as follows: 
"Every patent or any Interest therein shall be 
assignable in law by an Instrument in writing, 
and the patentee or his assigns or legal repre- 
sentatives may in like manner grant and con- 
vey an exclusive right under his patent to the 
whole or any specified part of the United States. 
An assignment, grant, or conveyance shall be 
void as against any subsequent purchaser or 

[86] 



mortgagee for a valuable consideration, without 
notice, unless it is recorded in the Patent Office 
within three months from the date thereof." 
The preparation of such instruments requires 
a special knowledge of patent law as well as 
general law relating to such matters and should 
be prepared by an attorney familiar with patent 
law. 

Employer and employee.— The question 
often arises as to the rights of an employer in 
inventions made by his employees. This ques- 
tion may be divided into two inquiries : First, 
under what circumstances is the employer en- 
titled to the patent itself; and, second, when is 
the employer entitled to use the invention made 
by an employee? 

The employer is not entitled to the patent 
of an employee unless an express contract has 
been entered into with the employee in which 
the employee has agreed to transfer such patent 
to the employer. In case of Pressed Steel Car 
Co. vs. Hansen, 137, Fed. 403, the Court after 
considering this question, said: "We have 
been referred to no case, nor have we been able 
to discover one in which, apart from express 

[87] 



contract or agreement, and upon the mere gen- 
eral relation of employer and employee and of 
the facts and circumstances attending it, the 
employer has been vested with the entire prop- 
erty right in the invention and patent monopoly 
of the employee, or with anything other than a 
shop right, or irrevocable license, to use the 
patented invention." 

On the other hand, when an employee, who 
has not entered into any such specific contract, 
uses the tools or material belonging to the em- 
ployer, and, performing the work on the time 
of the employer, produces an invention, to the 
use of which by the employer the employee as- 
sents, the employee is entitled to the patent but 
the employer is vested with an implied license, 
or "shop right," to use the invention, the extent 
of such "shop right" depending upon the par- 
ticular circumstances and the nature of the in- 
vention. This implied license or "shop right" 
usually occurs when the employee designs im- 
provements on the shop machinery or on the 
product manufactured by the shop. The Court 
in the case of Gill vs. United States, 160 U. S. 
426, stated: "This case raises the question, 



[88] 



which has been several times presented to this 
court, whether an employee paid by salary or 
wages, who devises an improved method of 
doing his work, using the property or labor of 
his employer to put his invention into practical 
form, and assenting to the use of such improve- 
ments by the employer, may, by taking out a 
patent upon his invention, recover a royalty 
or other compensation for such use. In a se- 
ries of cases, to which fuller reference will be 
made hereafter, we have held that this cannot 
be done." The patent In both cases must be 
aplied for in the name of the inventor, but may, 
of course, be assigned to the employer at the 
time the application is signed or later. 

Building a monopoly. — Few concerns 
ever obtain a practical monopoly in any line of 
business, and when such a monopoly is obtained 
it is usually the result of much thought and ef- 
fort. A single patent is rarely sufficient, it be- 
ing necessary to plan patent protection along 
broad and comprehensive lines. Even where 
a broad patent forms the basis of the business 
it is wise to buy or devise improvement or com- 
panion inventions and to protect them by pat- 



[89] 



ents. The trend of the industry should be 
studied and likely lines of development should 
be investigated. Where development seems 
likely or, in some cases possible, patents should 
be obtained which will govern and control these 
developments. By careful management mon- 
opolies can often be extended long after the 
broad patents have expired, due to the owner- 
ship of important detail patents. This requires 
careful and thorough work on the part of the 
patent attorney and close co-operation between 
the attorney and the client or his employees. 



[90] 



Chapter VII. 



INFRINGEMENT AND LITIGATION 



Avoiding infringement.— A person wish- 
ing to proceed In a certain line of business often 
finds that others have one or more patents that 
apparently bar him from that business. Very 
often these patents may be avoided. The first 
step is, of course, to determine just what such 
patents mean; that is, to determine the scope of 
the patents. This is ordinarily done by a pat- 
ent attorney, who carefully examines the patent, 
the history of the application in the Patent 
Office and the state of the art at the time the 
invention was made. Very often the patent 
attorney can suggest a plan whereby the client 
can proceed without infringing any such patents. 

If there is no method apparent by which in- 
fringement of the patent or patents can be com- 
mercially avoided the only hope of the client 

[91] 



lies in attacking the validity of the patent if he 
is sued. The probability of the success of such 
an attack can generally be forecasted if proper 
investigations are made. 

Validity. — The issue of a patent is not 
conclusive proof that the patentee is entitled to 
the claims allowed. The fees paid the Patent 
Office are small and for these fees the Patent 
Office cannot hope to finally and completely 
settle the inventor's status. For an example, 
the Patent Office cannot make an investigation 
of the circumstances surrounding the making 
of an invention sufficient to guarantee that some 
associate of the alleged inventor was not the 
real inventor, nor can it assure itself that the 
invention was not in public use somewhere in 
this country for more than two years prior to 
the date of application. 

The Patent Office merely examines the most 
accessible sources of information, namely, its 
own files and library, and if no anticipation is 
found, issues a patent. There is a presumption 
that every patent was properly issued, but this 
presumption is not very strong and the validity 
of the patent may be attacked by the presenta- 
tion of suitable evidence. 

[92] 



This evidence may be presented in any suit 
for infringement and a decision in any such 
suit is not final as against other infringers who 
may present new evidence of invalidity. A 
patent may be declared valid in several courts, 
only to be declared invalid by another upon the 
presentation of suitable evidence of invalidity. 
The presumption of validity arising from the 
original grant by the Patent Office is, of course, 
strengthened by subsequent court decisions. 

If a patent has ever been in litigation and 
there is a reported decision thereon, such de- 
cisions can be readily found. There are no 
available records in the Patent Office showing 
whether or not a patent has been invalidated by 
the courts, and it well before investing in any 
patent to find out if the patent has ever been in 
litigation, and the result thereof. 

Opinions on patents.— Where investors 
are contemplating purchasing patent rights, or 
investing in enterprises largely based on pat- 
ents, it is desirable that the validity of these 
rights be passed upon by a competent patent at- 
torney. This ordinarily involves an examina- 
tion of the title to the patent and a careful study 

[93] 



of the patent itself. It is also necessary to go 
into the history of the patent and to examine 
the prior art relating to the same. By such 
an examination it can be determined whether 
the invention is covered by the patent and whe- 
ther or not the device infringes upon any prior 
patent. 

This work may be considerable in complex 
cases but will be found to be of great value in 
avoiding litigation or unwise investment. 

Opinions on commercial value. — Attor- 
neys are often asked to give an off-hand opinion 
as to the chances of making money on a given 
invention. Few persons are competent to give 
such opinions, unless they are engaged in the 
business to which the invention relates and thus 
familiar with commercial conditions in that bus- 
iness. The financial returns from an invention 
depend upon so many variable quantities that 
conscientious attorneys always hesitate to ad- 
vise an inventor. Patents that seem to be of 
little merit have often solc^ for large sums, and 
many promising patents have proven entirely 
unprofitable. The inventor must appreciate, 
while the getting of a good patent is a matter 

[94] 



of prime necessity, that even where such a patent 
is granted, profitable returns will only result 
where the invention is properly exploited. 

The exploitation of patent rights is a busi- 
ness and is subject to all the usual hazards of 
business, as well as certain special hazards of its 
own. It may be said, however, that many pat- 
ents are unprofitable due either to the char- 
acter of the invention or lack of ability to pro- 
mote it on the part of the patentee. Many 
patents are taken out on trivial improvements 
with the result that the narrow claims allowed 
do not appeal to investors and the patentee 
reaps nothing but expense and disappointment. 

Infringement. — A patent is not infringed 
by any acts performed prior to the date of grant 
of the patent nor after the date upon which the 
patent expires. Filing an application for patent 
confers no right upon the applicant to bring suit 
against any one nor can such suit be brought 
until the issuance or grant of the patent. 

Infringement is the unauthorized manufac- 
ture, use, or sale of a patented invention, and 
such infringement is determined primarily by 
the claims of the patent. That is to say, if the 

[95] 



alleged infringement comes within the invention 
as set forth in any one, or more, of the claims 
of the patent, the charge of infringement is 
sustained. It is not essential that the defendant 
shall have both made, used and sold the infring- 
ing article to be guilty of infringement; either 
one or all of these acts may constitute infringe- 
ment. That is, the manufacturer of the infring- 
ing article, the seller, or the user may be sued 
separately. 

It may happen that a manufacturer may be 
sued for infringement even before he has had 
an opportunity to sell the infringing articles 
made by him, and this condition may arise after 
he has expended large sums of money in equip- 
ping his shop for the manufacture of the par- 
ticular goods in controversy. This situation 
may be avoided as stated elsewhere in this book 
had the manufacturer properly investigated the 
patent situation before embarking on the enter- 
prise. The fact that the infringer did not know 
of the existence of the patent sued on is no 
defense as a patent is a public record and the 
infringer is presumed to know of its existence. 

Scope of patent. — When a patent comes 
L'96] 



before a court as the basis of a suit for infringe- 
ment, assuming the patent to be valid, the first 
consideration for determination is the scope of 
the patent and the proper interpretation to be 
placed upon the claims of the patent. The 
status of the claims is fixed by the specification 
and the prior art, that is, the advance in the art 
made by the inventor is the invention covered 
by the patent. The patentee may have made a 
distinct advance in the art of such a character 
that the patent rises to the dignity of a pioneer 
patent, on the other hand, the patent may only 
embrace an improvement of limited character. 
In the first instance, a more liberal interpreta- 
tion is placed upon the patent than in the latter 
case. 

In the case of Railway Co. vs. Sayles, 97 
U. S. 554, the Court said: "If one inventor 
precedes all the rest, and strikes out something 
which includes and underlies all they produce, 
he acquires a monopoly and subjects them to 
tribute. But if the advance toward the thing 
desired is gradual, and proceeds step by step, 
so that no one can claim the complete whole, 
then each is entitled only to the specific form of 

[97] 



device which he produces, and every other 
inventor is entitled to his own specific form, so 
long as it differs from those of his competitors 
and does not include theirs. These general 
principles are so obvious, that they need no 
argument or illustration to support them." 

The second consideration Is — does the 
defendant's process or machine come within the 
claims of the patent. 

A patent for a process is infringed by him 
who, without right from the patentee, uses sub- 
stantially the process described In the patent, 
whether he uses the same apparatus or not, and 
whether he uses the same materials or their 
equivalents. In the case of Moore Filter Co. 
vs. Tonopah-Belmont Development Co., 201 
Fed. 532, the Court said: "As the apparatus 
shown in a process patent Is only to show that 
the process may be practically applied. It fol- 
lows that such illustrative apparatus does not 
limit the process patentee to that type of ma- 
chine alone; but the test of Infringement of a 
process patent is whether the apparatus used, 
no matter what Its form, utilizes the process." 

A patent for a machine is infringed by him 
[•98] 



who, without right from the patentee, makes, 
uses or sells a machine covered by any claim in 
the patent. In the case of Machine Co. vs. 
Murphy, 97 U. S. 120, the Court stated the fol- 
owing rule: "In determining the question of 
infringement, the court or jury as the case may 
be, are not to judge about similarities or differ- 
ences by the name of things, but are to look at 
the machines or their several devices or elements 
in the light of what they do, or what office or 
function they perform, and how they perform 
it, and to find that one thing is substantially 
the same as another, if it performs the same 
function in substantially the same way to obtain 
the same result; always bearing in mind that 
devices in a patented machine are different in 
the sense of the patent law where they perform 
different functions or in a different way, or pro- 
duce a substantially different result." 

Suits, where brought. — ^Suits for infringe- 
ment of patents are brought in the Federal 
courts, and may be either in the nature of an 
action for damages for past infringement, or 
an action to restrain the continuance of such 
infringement and the collection of profits which 

[99] 



the infringer has made, and damages, if any, in 
excess of the amount of these profits which the 
patentee may have suffered from the infringe- 
ment. 

Technical nature of suits. — The prosecu- 
tion or defense of infringement suits is of a 
highly technical nature and requires not only a 
technical knowledge of the subject matter of the 
invention, but also a knowledge of that portion 
of the law peculiar to patents. Such litigation 
is expensive and protracted and should not be 
entered without exhaustive searches and investi- 
gation into the patent involved and the effects 
and consequences of the litigation. 

Courts. — The Federal Courts have exclu- 
sive jurisdiction of patent and copyright cases 
prosecuted under the Federal Statutes. Sec. 24 
of the Judicial Code of the United States pro- 
vides : "The District Courts shall have original 
jurisdiction as follows : Seventh. Of all suits 
at law or in equity arising under the patent, 
the copyright, and the trade-mark laws." All 
actions respecting contracts relating to patent 
rights are not actions arising under the patent 
laws of the United States and are properly 

L'lOO] 



brought in the State Courts. Federal Courts 
also have jurisdiction of trade-mark cases aris- 
ing from infringement of trade-marks regis- 
tered in the United States Patent Office. Many- 
matters may arise in connection with contracts 
relating to patents, trade-marks, or copyrights 
which may be tried in the State Courts. 

Suits are primarily filed in any District Court 
of the United States and may be appealed there- 
from to the Circuit Court of Appeals having 
jurisdiction over that district. It is rarely 
possible to carry patent litigation from a Cir- 
cuit Court into the Supreme Court of the United 
States as this can ordinarily be done only where 
the interpretation of some new point of law is 
involved. Since the law of patents is quite well 
settled it is only rarely that a new question 
arises which necessitates action by the Supreme 
Court. 

Jurisdiction. — -An infringer must be sued 
in the district in which he is an inhabitant or 
he may be sued in any district in which he may 
have committed acts of infringement and in 
which he has a regular and established place of 
business. 



[' 101 ] 



The Judicial Code* provides as follows: 
"Sec. 48. In suits brought for the infringe- 
ment of letters patent the district courts of the 
United States shall have jurisdiction, in law or 
in equity, in the district of which the defendant 
is an inhabitant, or in any district in which the 
defendant, whether a person, partnership, or 
corporation, shall have committed acts of 
infringement and have a regular and established 
place of business." By district is meant that 
portion of the United States within the judicial 
district of any District Court of the United 
States. Nearly every state is divided into two 
or more districts. If the defendant is not an 
inhabitant in the district where the suit is 
brought he must, whether a person, firm or cor- 
poration, have a regular and established place 
of business in that district to give the court of 
that district proper jurisdiction over him. It 
is not sufficient that he sell goods by travelling 
salesmen or by mail within the district. In 
many cases a manufacturer outside a district 
sells goods to a merchant who sells them with- 
in the district. In this case the merchant can 
be sued in the district but not the manufacturer. 



[102] 



unless the manufacturer maintains an office and 
has a representative therein within the district. 

Defenses. — There are numerous defenses 
which may be available in an infringement suit. 
Walker on Patents enumerates twenty-seven 
defenses. Some of the defenses attack the val- 
idity of the patent on the grounds that the sub- 
ject matter of the patent is neither an art, 
machine, manufacture nor composition of mat- 
ter, that the alleged invention was not new or 
useful or that the exercise of inventive skill was 
not required to produce it, that the invention 
was in fact the invention of another or that the 
alleged sole invention was in fact a joint inven- 
tion; on the other hand, the defendant may set 
up the defenses that his process or machine does 
not infringe the patent sued on or that the 
defendant has a license. 

Of those defenses enumerated above, the 
most important is the defense of non-infringe- 
ment and is proven by showing the claims of the 
patent sued on do not cover the process used 
or the thing made, sold or used by defendant. 
The defense of want of novelty of the subject 
matter of the patent is also a defense frequently 

[' 103 ] 



used and is proven by showing that the same 
was not new at the time of the alleged inven- 
tion, or that it was in public use or on sale more 
than two years prior to the application for pat- 
ent or that it was patented or described in some 
printed publication before the alleged inven- 
tion or more than two years before the date of 
application for patent. 

If the patent is not infringed or if proper 
proof is offered to show that the patent is 
invalid, the suit is dismissed and the defendant 
is entitled to recover court costs from the plain- 
tiff, such costs however not including attorneys' 
fees. 

If the patent is found to be valid and 
infringed, the defendant, if the suit is brought 
at law, will be required to pay damages suffered 
by the plaintiff. On the other hand, if the suit 
is brought in equity and the patent found valid 
and infringed, the matter will be referred to a 
Master for the purpose of determining the 
profits made by the defendant by use of the 
infringing process or machine. Damages may 
also be had in an Equity suit under certain cir- 
cumstances. In addition to the profits or dam- 



[104] 



ages collected by a successful plaintiff in a suit 
in equity, the Court will issue an injunction 
against further use by the defendant of the 
infringing thing. 

Injunctions. — ^Injunctions are issued in 
suits in equity by the Federal Courts to prevent 
further infringement of patents, trade-marks, 
or copyrights. They are formidable weapons 
backed by the full weight of the United States 
Government and are very rarely disregarded. 
The Federal judges, having in mind the conse- 
quences of such injunctions,- will never grant 
them except in cases where the infringement is 
plain and the ownership and validity of the 
right sued on is certain. Usually injunctions 
cannot be obtained until after final hearing of 
the litigation, but in certain cases preliminary 
injunctions will be granted shortly after the 
suit is filed. Preliminary injunctions are rarely 
granted except where the infringement is certain 
and where there has been a previous full and 
complete adjudication of the patent by a Fed- 
eral Court. 

Permanent injunctions are issued in equity 
suits after a full hearing of the case and the 

[•105] 



patent adjudged valid and infringed, such 
injunctions being usually the main things sought 
in such suits, as they effectually stop further 
infringement. 

Damages. — Damages in suits on patents, 
copyrights, and trade-marks may be obtained in 
either actions at law or suits in equity. In the 
latter decrees for accounting may be had which 
assist in determining the damages. The plain- 
tiff is entitled to recover either his actual dam- 
age caused by defendant's infringement or the 
defendant's profits in patent cases, if these 
profits are greater than the proved damages. 

Sec. 4921 of the Revised Statutes provides 
in part as follows: "But in any suit or action 
brought for the infringement of any patent 
there shall be no recovery of profits or damages 
for any infringement committed more than six 
years before the filing of the bill of complaint 
or the issuing of the writ in such suit or action." 

In suits on design patents minimum damages 
of two hundred and fifty dollars are fixed by 
statute and in copyright cases certain damages 
are also fixed by statute. 

[ 106 ] 



Triple damages are sometimes awarded in 
cases of wilful infringement. 

Unfair competition. — Unfair competition 
consists essentially in the conduct of a trade or 
business in such a manner that there is an ex- 
press or implied representation that the goods 
or business of one person are the goods or busi- 
ness of another. It is unfair to pass off one's 
goods as those of another person; to imitate 
a rival's trade-name or label; or to copy or 
imitate the actual goods made or sold by a com- 
petitor, etc. Suits for the protection of a busi- 
ness against unfair competition are usually local 
in character and are frequently brought in the 
state courts. While the Law of Unfair Com- 
petition is of recent growth, the boundaries for 
fairly conducting a business are quite well 
defined, and in many instances advice as to the 
style or get-up of goods before placing the same 
on the market will prevent later loss and 
defense of suits which might be avoided. 



[' 107 ] 



Chapter VIII. 



MISCELLANEOUS INFORMATION 



Foreign patents. — There are at the pres- 
ent time about a hundred countries which have 
patent laws and in which patent protection can 
be obtained. The laws of these various coun- 
tries differ widely as to requirements, and to 
enumerate such requirements of the respective 
countries would require an explanation too long 
for a book of this kind. The foreign patent 
laws differ from the United States laws in many 
ways. Most of the foreign countries have spe- 
cial regulations requiring the payment of taxes 
on patents at regular intervals to keep the 
patents alive, these taxes varying in amount 
according to the laws of the different countries. 
In some of the foreign countries it is also neces- 
sary that the public derive some benefit from the 



L' 109 ] 



patent during the life of the same. In other 
words, it is necessary that the invention be 
worked within a given time. Such working 
may consist of the actual use of the invention, 
upon reasonable terms made by the inventor, 
or it may consist merely in an advertising of 
the invention for the purpose of inducing some 
person to use it. No taxes are levied nor is 
working necessary in connection with United 
States patents. Foreign patents are ordinarily 
obtained through associates located in the 
respective foreign countries. 

The cost of foreign applications is gener- 
ally slightly higher per country than in the 
United States. Complete protection in all for- 
eight countries is quite expensive. 

It is undoubtedly a fact that most foreign 
patents are unprofitable to the patentees and 
money should not be expended on such patents 
without a clear idea of the manner in which the 
patents can be made profitable. 

Trade-marks. — A trademark is an arbi- 
trary word, symbol or mark affixed to goods or 
to the packages containing the same, by which 
a manufacturer distinguishes his goods on the 

[110] 



market from the goods of the same kind placed 
upon the market by others. The average man- 
ufacturer does not appreciate the great value of 
registering a trade-mark under our Federal and 
state laws. Trade-marks are vested in the 
owner as long as they are used and not aban- 
doned. The registration thereof may be 
renewed at expiration of twenty (20) years, 
provided the same is still in use. The more 
extensive the use of a trade-mark, and the longer 
it is in use, the more value it possesses. 

Federal trade-marks, which cover the 
United States and its possessions, are, of course, 
of the greatest value, and the requirements for 
registration are much more strict than in the 
case of state trade-marks. 

Where it is the intention to confine the busi- 
ness to a single state, a state trade-mark regis- 
tration in that particular state is often suffi- 
cient, and in many cases is the only registration 
'that can be obtained. 

To register a trade-mark under the laws of 
the United States, the mark must have been 
used by the applicant in interstate or foreign 
commerce, and it must be free from certain 

['111] 



objections, which have become well defined by 
statute and the decisions of the courts. In a 
general way it may be stated that to secure reg- 
istration of a trade-mark it must not be descrip- 
tive of the character or quality of the goods 
upon which it is used, it must not ordinarily 
consist of the name of an individual, firm or 
corporation, nor of a geographical term. 

Federal registration is valuable because it 
gives notive to the world and is prima facie evi- 
dence of ownership, it gives the owner the right 
to bring suit for infringement in the Federal 
courts and is also record proof of the date of 
use which otherwise might be lost or difficult 
of proof. 

Foreign trade-marks. — In the United 
States, ownership of a trade-mark is acquired 
by the use of the mark. In South American 
countries and many other foreign countries, 
ownership is based entirely upon registration, 
the result being that in such South American 
and foreign countries any person may register 
a trade-mark whether he has used the same or 
not, even though such mark has been used by 
someone else. In such countries, the law grants 

[112] 



the trade-mark to the first applicant, therefore 
exporters find that the best and safest policy to 
follow upon deciding to enter the foreign field,' 
is to first register their trade-mark in the chosen 
country, thus avoiding the probability that some 
foreign concern registers the trade-mark, mak- 
ing it impossible to sell or exploit the goods of 
the exporter under his own trade-mark. Fur- 
ther, it is advisable that the exporter himself 
obtain the trade-mark rather than to apply for 
it through a foreign agent. 

Copyrights. — Copyrights may be regis- 
tered for a term of twenty-eight (28) years, 
subject in some cases to a renewal for a further 
term of twenty-eight (28) years. The follow- 
ing general classes- of works may be copy- 
righted: Books, periodicals, lectures, sermons, 
addresses, dramatic, dramatico-musical compo- 
sitions, musical compositions, maps, works of 
art, reproduction of works of art, drawings 
and plastic works of a scientific or technical 
character, photographs, prints, and pictorial 
illustrations, motion picture photoplays, and 
motion pictures other than photoplays. 

The proper procedure for obtaining copy- 



[■113] 



rights on books and similar articles is to place 
on sale, sell, or publicly distribute copies of the 
thing copyrighted with a notice of copyright 
consisting of the word "Copyright," followed 
by the year when first published, together with 
the name of the copyright proprietor. This 
act should be followed by a formal application 
for registration of copyright addressed to the 
Register of Copyrights and accompanied In the 
case of a printed work by two copies of the 
best edition of the work. In the case of unpub- 
lished works, one manuscript copy must be sent. 
In the case of photographs not intended for gen- 
eral circulation, or in the case of paintings, 
drawings or sculpture, one photographic print 
is sufficient. In the case of registering claims 
to copyright on books it is necessary to also 
file an affidavit as to the manufacture. 

Prints and labels. — The law provides for 
the registration of prints and labels and has 
defined a PRINT to be any artistic and intel- 
lectual production designed to be used for an 
article of manufacture and in some fashion 
directly pertaining thereto, but not borne by it, 
such, for Instance, as an advertisement; and the 



[114] 



word LABEL is defined as an artistic and intel- 
lectual production impressed or stamped directly 
upon the article of manufacture or upon a slip 
or piece of paper or other material to be 
attached in any manner to manufactured arti- 
cles or to boxes and packages containing them 
to indicate the article of manufacture. 

A certificate of registration of a print or 
label remains in force for twenty-eight (28) 
years from the date of the first publication, and 
may be continued for a further terms of twenty- 
eight years upon filing a proper application for 
such extension. 



['115] 



Chapter IX. 
PUBLICATIONS 



The Patent Office issues a book, Rules of 
Practice, which is sent free upon request. It 
contains the regulations of the office relating 
to the preparation and prosecution of applica- 
tions, appeals, interferences, reissues, etc. 

The Patent Office also issues a Weekly 
Gazette, in which are listed all patents issued, 
a portion of the drawing and one of the claims 
being usually printed. Individual copies of the 
Gazette may be purchased or one may subscribe 
for it by the year. Bound copies of the Ga- 
zette are usually found in every public library 
and as they are indexed both as to patentees and 
as to inventions it is possible to obtain there- 
from information as to any particular patent 
if the number or date is known. 



i'117] 



Printed copies of an issued patent may be 
obtained direct from the Patent Office for ten 
cents each, Congress having increased the price 
from five cents on November 4, 1919. Books 
containing coupons which can be exchanged for 
patents may be purchased from the Patent 
Office and form a convenient method of order- 
ing patents as the Patent Office will not accept 
postage stamps. 

The Patent Office also sells a Manual of 
Classification. 



[118] 



LIBRARY OF CONGRESS 



030 016952 1 





